Patents

The primary sources of patent law are as follows:

• Section 39 of the Civil Code of Ukraine (as amended); and
• the Law of Ukraine on the Protection of Rights to Inventions and Utility Models (1771-III), as amended, which sets out:
• • the key requirements for obtaining a patent;
  • the rights of the patent owner; and
  • the procedure for filing a patent application and challenging the validity of a granted patent before the Ukrainian Intellectual Property Institute (Ukrpatent), as the Ukrainian patent office, and the courts.

Ukraine is also a party to several international treaties, including:

• the Paris Convention for the Protection of Industrial Property 1883 (ratified on 25 December 1991);
• the Patent Cooperation Treaty 1970 (ratified on 25 December 1991); and
• the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights 1994 (ratified on 16 May 2008).

The following rules apply with regard to the registration of a patent:

• As a general rule, an individual who is the inventor or a legal entity may apply for a patent, subject to the below.
• If several individuals create an invention (utility model), each being an inventor, the relevant individuals may jointly apply for a patent, unless otherwise agreed between them.
• In relation to employee inventions only, an employer has the right to register a patent (unless otherwise set out in the relevant agreement with its employee), in which case several procedural requirements apply – in particular, the following:
• • An employee must duly notify the employer of his or her invention;
  • The employer must file the relevant application with Ukrpatent to register a patent, assign its right to register a patent to a third party or classify invention information; and
  • The employer must enter into an agreement with its employee regarding the remuneration for the creation of such invention.
• In any case, a successor to the inventor/employer has the right to register a patent.

Starting from the date following the registration date (or, in relation to classified inventions (utility models), from the registration date), the patent owner has the right to:

• use, at its sole discretion, the patented invention;
• prevent unauthorised use of the patented invention, including by prohibiting such use;
• dispose of its rights to the patented invention by way of assignment or otherwise;
• grant a right to use the patented invention (licence); and
• mark a product or its packaging manufactured with the use of the patented invention.

If several holders jointly own a patent, none of them may grant permission (licence) to use the relevant invention (utility model) or transfer such invention (utility model) without the consent of the other holder(s) of such patent.

If patent infringement occurs, the patent owner may enforce its rights by:

• bringing an action for patent infringement before the Ukrainian courts (including the specialised IP Court, once established), seeking, among other things:
• • cessation of unauthorised use of the patented invention;
  • withdrawal of infringing products from the market; and
  • compensation for damages caused by the infringement;
• initiating a criminal investigation into a gross patent infringement that causes damage in the amount of at least (approximately) $800;
• where the infringement concerns unfair competition, submitting a complaint to the Anti-monopoly Committee of Ukraine; and/or
• enforcing customs measures by recording the relevant patented invention (utility model) in the designated customs register and seeking to detain or suspend the release of potentially infringing goods.

A patent owner may enforce its patent during the period for which patent protection is granted, which is:

• in relation to inventions, 20 years from the filing date of an application or international application, as applicable (subject to the right to extend patent validity by obtaining a supplementary protection certificate – please see question 3.6); and
• in relation to utility models, 10 years from the filing date of the application.

In each case, this is provided that the patent holder pays annual renewal fees and does not surrender the patent.

The Ukrainian Intellectual Property Institute (Ukrpatent) controls the registration procedure.

The official fees payable to Ukrpatent are approximately:

• in relation to inventions (up to three claims):
• • a filing fee of $60 (this may be increased depending on the number of claims);
  • a fee of $230 per claim due for filing a request for substantive examination (plus $230 for each extra claim); and
  • a granting fee of $200 for filing a request for patent publication; and
• in relation to utility models (up to three claims):
• • a filing fee of $90 (this may be increased depending on the number of claims); and
  • a granting fee of $200 for a request for patent publication.

If an applicant engages a patent attorney to prepare a patent application, the total fees for preparing the documents set out above will amount to around $1,400 (in relation to an invention) and $1,100 (in relation to a utility model) depending on complexity; in each case plus the relevant fees due for the translation of an application (approximately $15 per page).

Ukrpatent may reject a patent application that fails to satisfy the requirements set out by law, which are as follows:

• An invention (utility model) must satisfy the requirements of patentability (ie, it must be new, industrially applicable and, in relation to inventions only, involve an inventive step);
• The subject matter of the invention (utility model) must be eligible for patent protection;
• The patent application must disclose the invention in sufficient detail for the invention (utility model) to be performed by a person skilled in the art; and
• The patent application must satisfy the formal requirements, including the requirements relating to the form of a patent application and the fees payable for filing.

While Ukraine does not provide specific accelerated (fast-track) examination programmes or initiatives for patent applications, an applicant can, as a matter of practice, accelerate the substantive examination of its application.

Patent protection for inventions and utility models does not apply to:

• plant varieties or animal breeds;
• basic biological (except for non-biological and microbiological) processes of the reproduction of plants and animals;
• integrated circuit topography;
• industrial designs;
• methods of treatment of the human or animal body by surgery or therapy, or methods of diagnosis practised on the human or animal body (however, this restriction does not apply to products (substances or compositions) used for treatment or diagnosis);
• processes for cloning human beings;
• processes for modifying the germ line genetic identity of human beings;
• uses of human embryos for industrial or commercial purposes;
• processes for modifying the genetic identity of animals which are likely to cause them suffering without any substantial medical benefit to humans or animals, and animals resulting from such processes;
• the human body at the various stages of its formation and development, and the simple discovery of one of its elements, including the sequence or partial sequence of a gene (however, in certain cases, this restriction does not apply to an element isolated from the human body or otherwise produced by means of a technical process which is susceptible of industrial application);
• plants or animals, if the technical feasibility of the invention is confined to a particular plant or animal variety; and
• biological materials or process in their natural environment.

On the request of a patent owner, and subject to payment of additional fees, supplementary protection certificates (SPCs) are available to extend the term of a patent covering medicinal/pharmaceutical products or plant/animal protection products which require the permission of a designated authority before being placed on the Ukrainian market.

The relevant SPC becomes effective after the expiry of the initial term of a patent and remains valid for up to five additional years. If the SPC relates to a medicinal product for children for which data has been submitted, a six-month additional extension is also available.

In each case, protection is subject to payment of annual renewal fees.

Save for the exceptions set out in question 3.5, patent protection is provided for:

• in relation to inventions, a product (including a device, substance, micro-organism or culture of cells of plants or animals) or process that:
• • is new;
  • is capable of industrial application; and
  • involves an inventive step; and
• in relation to utility models, a device or process that:
• • is new; and
  • is capable of industrial application.

If Ukrpatent rejects a patent application, the applicant may, at its discretion, file an appeal with the Chamber of Appeals of Ukrpatent or the Ukrainian court, in each case within two months of the date on which the applicant receives:

• the relevant decision to reject the patent application; or
• if requested by the applicant, the additional materials related to the examination of the patent application.

Depending on the grounds and the time that has elapsed since registration of the patent, a person may challenge the validity of the patent:

• before the Ukrainian Intellectual Property Institute (Ukrpatent) (a post-grant opposition procedure is available), whose decision may be further challenged in the Ukrainian courts; or
• directly before the Ukrainian courts.

To commence post-grant opposition proceedings, any person may file an application with Ukrpatent, subject to payment of the applicable fee. Court proceedings are commenced by submitting a claim against the relevant patent owner and Ukrpatent.

Within the post-grant opposition procedure, a person may challenge, in whole or in part, the validity of an issued patent before Ukrpatent if the patent fails to satisfy the patentability requirements.

To invalidate an issued patent in court, a person may rely on the following grounds:

• The granted patent fails to satisfy the patentability requirements;
• A claim in the granted patent contains features which were not disclosed in the patent application;
• The patent owner has failed to comply with the requirements applicable to the registration of an international patent under the Patent Cooperation Treaty (in such case it cannot bring an application before Ukrpatent first before filing it abroad); or
• The granted patent infringes the rights of another person.

A justified application for invalidation must be filed before Ukrpatent. Each party (ie, the applicant for invalidation and the patent holder) is then afforded a reasonable opportunity to present its case.

The evidentiary standard applied in the Ukrainian courts to invalidate an issued patent is the ordinary standard of the balance of probabilities, where each party must submit evidence in support of its claims.

Pre-grant and post-grant opposition procedures are available. Please refer to questions 4.1 to 4.3.

Within the post-grant opposition procedure, any person may file an application before Ukrpatent. As regards invalidity proceedings before the Ukrainian courts, the relevant plaintiff must prove that it has a legitimate interest which cannot be satisfied due to the disputed patent.

A pre-grant opposition must be filed within six months of the application publication date, while a post-grant opposition must be filed as follows:

• in relation to a patent granted for an invention, within nine months of the patent registration date; and
• in relation to a patent granted for a utility model, within the whole lifetime of the relevant patent and following its termination.

Please refer to question 4.3.

An application filed in pre-grant opposition proceedings must be taken into account by Ukrpatent and included in the examination report. Accordingly, it may affect the decision on whether to grant the patent.

As regards post-grant opposition proceedings, Ukrpatent may:

• reject the opposition, in which case the patent will be maintained as granted; or
• invalidate the patent in whole or in part. In the latter case, the patent will be maintained in amended form (eg, one or several independent claims will be removed or amended).

Please refer to question 4.4.

A post-grant review decision adopted by Ukrpatent or the court, as applicable, may be further appealed by the applicant. The grounds of appeal are the same as the grounds for opposition.

A patent is enforceable for the entire term of its validity, unless it is:

• surrendered earlier by the patent owner; or
• invalidated according to Ukrainian law.

In particular, when a patent holder enforces its patent in court, it is common to file a counterclaim requesting invalidation of the relevant patent, thus making it unenforceable.

Not applicable.

Not applicable.

The scope of patent protection is determined by the patent claims; and the description and drawings are used to interpret those claims. Accordingly, unless an exemption applies, any unauthorised use of a patented invention (utility model) within the scope of its protection constitutes patent infringement. This may include:

• making, using, offering for sale, selling, importing or otherwise putting on the Ukrainian market a product that uses the patented invention (utility model), or storing a product for such purposes; and
• using a process protected by a patent or offering it for use if the person offering such process knows or should have known that its use is prohibited without the consent of the patent owner.

Yes, Ukraine applies the doctrine of equivalents. Specifically, Ukrainian law provides that a patented invention (utility model) is deemed used if all features of the independent claims (or features equivalent to them) are used in the product or the method.

The Ukrainian patent laws have territorial scope. Accordingly, a party will not be liable before the local courts for a patent infringement that occurs outside Ukraine.

Ukraine neither applies specific standards to determine wilful patent infringement nor sets out additional remedies to be used against parties that cause wilful infringement.

The patent owner or, if expressly permitted by the patent owner, its licensee may bring an infringement action.

The timeframe for bringing an infringement action is three years from the date on which the plaintiff discovered or should have discovered the infringing act.

In patent infringement proceedings, the plaintiff should submit sufficient evidence illustrating how the patent has been infringed. Specifically, in its statement of claim, the plaintiff must set out, among other things:

• a statement of the facts on which the plaintiff relies;
• the evidence confirming the same;
• the legal grounds for bringing a claim; and
• the remedies sought to be applied against the defendant.

Patent infringement actions may be brought before:

• the courts, including the Ukrainian IP Court once established; and
• to the extent the case concerns matters of unfair competition, the Anti-monopoly Committee of Ukraine.

Until the Ukrainian IP Court is established, a plaintiff may bring an infringement action before:

• the commercial courts, if both parties to a dispute are legal entities and/or individual entrepreneurs; or
• otherwise, the general courts.

In each case, jurisdiction is based on the registered address of the defendant.

To the extent that an infringement action concerns acts of unfair competition, the patent owner or, if permitted, its licensee may bring an application before the Anti-monopoly Committee of Ukraine.

In patent infringement cases, each party collects and submits evidence, and may be compelled to disclose evidence at the request of a court. The relevant judge will be the fact finder.

Yes. In proceedings brought before the courts, a judge will act as the fact finder based on the evidence collected and submitted by the relevant parties.

In proceedings initiated before the Anti-monopoly Committee of Ukraine, an infringing party must disclose all documents and information upon the request of the committee. The committee will act as the fact finder.

In patent infringement proceedings, the main steps leading up to a trial in patent cases are as follows:

• Before filing a statement of claim, the patent owner (or its licensee) may resolve the dispute by:
• • submitting a cease and desist letter;
  • conducting negotiations with the infringer; or
  • using other alternative dispute resolution methods.
• In the meantime, the patent owner will collect evidence confirming the infringement, including by requesting an independent report certified by a court expert (while this report, at least formally, does not have any greater evidentiary value, it is still treated as the most importance evidence in patent infringement cases).
• If the dispute is not resolved outside of court, the first stage in initiating patent infringement proceedings is for the plaintiff to file and serve a statement of claim (some particulars of which are set out in question 6.7), together with any evidence. If the statement of claim contains no deficiencies, the court will open a case.
• The respondent may file a statement of defence, together with any evidence. Evidence submitted after the statement of claim or statement of defence should not, as a rule, be accepted, unless the relevant party proves that it was not possible to submit such evidence along with the relevant document.
• The plaintiff may respond to the statement of defence and the respondent may also respond to the plaintiff’s reply, following which the court will schedule a preliminary hearing at which it will decide on several matters. It may then schedule the first hearing on the merits (trial). The trial will consist of a series of hearings involving the parties’ presentation of the case, the examination of evidence (including, to the extent applicable, the relevant expert reports) and debates.

The remedies that may be sought by plaintiffs are:

• preliminary injunctions (please see questions 9.1 and 9.2);
• compensation for damages (direct and lost profits);
• prohibition on using the patent;
• seizure and destruction of counterfeit products; and
• publication of the court decision.

All decisions of first-instance courts may be appealed on legal and factual grounds. The relevant court of appeal will consider whether to uphold or annul (in whole or in part) the decision of the first-instance court. In limited circumstances, the decision of the court of appeal may be further challenged before the Supreme Court (eg, if the court of appeal failed to apply the well-established practice of the Supreme Court).

Ukrainian law provides for discovery proceedings at the pre-trial stage and during the trial. Accordingly, each party bears the burden of collecting and submitting the relevant evidence, save where the court (at the request of one of the parties) compels the other party to present specific documents that are relevant to the case.

Please see question 7.1.

Please see question 7.1.

The claim terms are defined by the court in its judgment on the patent infringement action.

The limits of the protection of a patent are determined by its claims. In interpreting the claim terms, the description and drawings of the invention (utility model) may be taken into consideration.

Please see question 8.2.

Yes, temporary injunctions may be granted before and during the relevant court proceedings. However, the application seeking an injunction must not duplicate the relevant claims (as otherwise the court may in fact satisfy the claim while granting the injunction).

The application for an injunction (or several injunctions) must demonstrate that enforcement of the final judgment, effective protection or restitutio in integrum sought by the applicant would be impaired or impossible without the injunction(s). The applicant must be also in a position to guarantee compensation of possible damages which may be caused as a result of the performance of an injunctive order (counter injunction).

Yes, the patent owner may seek compensation for damages.

The patent owner may seek compensation for actual damages and lost profits.

Please see question 9.2.

No.

Yes, please see question 9.8.

If a party fails to comply with an injunctive order, the court may impose a fine on that party within the limits set out by law.

Yes, a successful party may recover its costs related to a case, including its attorneys’ fees, from the adverse party. For further information please refer to question 9.10.

As a general rule, the party in whose favour the case was resolved has the right to recover the relevant attorneys’ fees at the expense of the adverse party, as long as it has provided evidence proving the relevant attorneys’ fees and such fees are proportionate, in each case to be assessed by the court on a case-by-case basis.

The patent owner may grant an exclusive, sole or non-exclusive licence to use the patented invention (utility model) to the relevant licensee. The relevant ways in which the licensee may use the patented invention (utility model) must be set out in the relevant licence agreement.

Subject to compliance with all other laws (including antitrust laws), there are no restrictions on the provisions that a patent owner may include in a licence agreement. Accordingly, as a general rule, the patent owner may set out the territory and term of the relevant licence, and can limit the ways a licensee may use the patented invention (utility model).

Ukrainian law does not impose specific limits on the scope of patent protection. At the same time, antitrust laws may be invoked if the patent owner sets out contractual limitations that are deemed to be anti-competitive concerted actions. For example, in certain cases, this issue may arise if the licence agreement in relation to a patented invention (utility model) contains a non-compete or other similar provision.